overview of after final practice at the uspto- justin cassell

Overview on After Final Practice at the USPTO

Presented by Justin J. CassellJanuary 2017

© 2017 Workman Nydegger

• A Final Rejection is intended to close prosecution of the application on second or any subsequent examination or consideration by Examiner.

• But wait– While a Final Office Action may appear to be the

end of prosecution, it may not necessarily be the end of the line.

• Instead– The USPTO offers a few options to address the

final rejection or reopen the prosecution of the application.

Response After Final Rejection: When is a Final Rejection Proper?

Options in Responding After a Final Office Action

• Response after Final Office Action• After Final Consideration Pilot Program (AFCP)• Request for Continued Examination (RCE) with

submission• Notice of Appeal and Pre-Appeal Brief

Conference • Appeal• Continuation or Continuation-in-part application• Abandonment

• A patent examiner may issue a Final Office Action when: – Previous arguments are unpersuasive; OR– A new ground of rejection is required by amendments made to

the claims in the previous response; OR– A new ground of rejection is required by a reference in an

information disclosure statement submitted after the first action.• On first action if:

– Application is continuation of or substitute (previous filing of RCE) for earlier application AND

– All claims are (1) drawn to same invention claimed in earlier application AND (2) would have been properly finally rejected on grounds or art of record in next Office Action if had been entered in an earlier application.

Response After Final Rejection: When is a Final Rejection Proper?

Response After Final Rejection:Applicant Options and USPTO Results• Applicant Options for the Response:– Request for reconsideration– Claim amendment

• USPTO Response to the Response:– Allow application or certain claims– If response does not place the application in

condition for allowance, the Examiner may issue an Advisory Action, whereby: • Examiner provides reasons for not allowing

claims.• Evaluate claim amendment entry and grounds

for entry or non-entry.

• Office Action gives Application 3 months from mailing date of Final Action to response – “Shortened Statutory Period for reply” (SSP).

• But SSP expires on mailing date of Advisory Action if:– (1) Reply filed within 2 months of mailing date (expedited

handling) of Final Action AND (2) Advisory Action not mailed until after end of 3 months from mailing date of Final Action.

• No later than 6 months from mailing date of Final Action –“Statutory Period for Reply” (SP)– Replies filed after expiration of SSP will require payment of

extension fees.– Period for reply cannot be extended beyond SSP.– Filing only Response does not stop SP for reply.

• Replies that stop the running of the Statutory Period:– Filing of a Notice of Appeal.– Filing of a Request for Continued Examination.

Response After Final Rejection:When to File Reply to Final Rejection?

• What can it include: Applicant Actions– Includes a writing pointing out Examiner’s errors.– May include an amendment according to limited scope.– Must be filed within six months of the date of the Final

Rejection and prior to filing Notice of Appeal.• Does not toll or stop statutory period.

• How is it considered by the examiner?– The Examiner will reconsider the application with

respect to the response and either allow the application or notify the applicant of deficiencies that still exist (Advisory Action).

Response After Final Rejection:What Can the Response Include?

Response After Final Rejection:What May Be Amended After Final?• File an Amendment and Response After Final under 37

C.F.R. § 1.116.– To comply with Examiner’s suggestions.– To reduce issues on appeal i.e., cancel claims. – To present claims in better form for consideration on

appeal.– If they raise new issues of patentability, the Examiner will

likely refuse to enter them.• Examiner will either enter the amendment in its entirety

or explain reasons for not entering the amendment.• Examiner may enter amendment only for purposes of

appeal.

Final Rejection

• Amendments of claims compliant with 37 CFR §1.116

• Writing pointing out Examiner’s errors

• Any fees required for timing extension

Office decision Applicant Options Possible Results

Advisory Action

Allowance

Be mindful of when amendment and/or response is filed.If within 2 months, different determination of response period for advisory action.

Statutory period (SP) continues when response filed – 6 month maximum.

Unless proposed amendment entered in its

entirety, Examiner will briefly explain the reasons for not

entering the proposed

amendment

Response After Final Rejection

• When can it be filed: Claims must be finally rejected.• Procedure: Applicant submits –– Request to participate in AFCP 2.0.– Statement of availability for interview.– Non-broadening amendment to at least one

independent claim– No fee for filing request

After Final Consideration Pilot Program 2.0 (AFCP 2.0)

• Effect: Authorizes additional time for examiners to search and/or consider responses after final rejection.– If Examiner can complete any necessary search in

limited time, will consider Amendment.– If Examiner cannot complete search in time, Examiner

rejects AFCP request and treats amendment as a request for reconsideration.

– Examiner may schedule interview with applicant whether or not amendment places in condition for allowance.

– An RCE may still be required for entry of amendment, but the AFCP may provide insight to eventual allowance after filing amendment with RCE.


Final Rejection

• Application allowed • If not allowed, Examiner will

schedule interview with applicant to discuss the amendment

If additional search required but cannot be completed in allotted time (3 hrs), treated as Request

for Reconsideration

If additional search required ANDcan be completed in allotted time,

Examiner will search and consider whether amendment

places in condition for allowance

If applicant not available for interview within ten days of contact, treated as Request for Reconsideration

Office decision

Applicant actions

Result(s)Office Procedure

If no additional search required, Examiner will consider whether amendment places in condition

for allowance

• Request to participate in AFCP 2.0

• Statement of availability for interview

• Non-broadening amendment to at least one independent claim

• No fee for filing request


Be mindful of when AFCP 2.0 and response are filed.Same timeline applies as a response after final.

Statutory period (SP) continues when AFCP 2.0 request and response filed – 6 month maximum.

• When can it be filed: When prosecution is closed.• Procedure:

– Payment of fee AND– Submission which may include:

• Submissions may include Information Disclosure Statement (IDS), amendments to written description, claims, or drawings, new arguments, or new evidence in support of patentability.

• Effect: If timely filed, finality withdrawn and submission will be entered and considered: prosecution reopened

• Fees: Higher fees for RCE’s filed in an application after a first RCE.– First RCE: $1,200 USD (large entity)– Each subsequent RCE: $1,700 USD (large entity)

Request for Continued Examination (RCE)

• If there is no submission with filing an RCE and fee, does not stop 6 month statutory period

• Not applicable to Design applications or patents under Reexamination.

• Can be used to reopen prosecution after an issue fee is paid along with filing a request to withdraw from issue and a submission.

• Can be used to reopen prosecution during appeal or after an appeal decision is issued along with a submission.

Request for Continued Examination (RCE)Additional Considerations

Final Rejection

Payment of Fee per §1.17(e) and Submission

which may include: • IDS • amendments to written

description, claims, or drawings

• new arguments • new evidence

If timely filed, finality withdrawn and

Submission will be entered and considered:

prosecution reopened

Office decision Applicant options Possible Results

Request for Continued Examination (RCE)

• Purpose: Created to expedite prosecution by reducing time and expense spent on appeal briefs

• When can it be filed: When claims are twice or finally rejected. Must file Notice of Appeal within six months of final rejection (with extension of time after SSP).

• Procedure: – File Notice of Appeal (tolls SP)– Request to participate in Pre-Appeal Brief Conference

Pilot Program.– Summary of Arguments, filed at same time as Notice of

Appeal.– Pay Notice of Appeal fee ($800 USD large entity)

Pre-Appeal Brief Conference Pilot Program

• Effect: Panel of examiners (often including Supervisor, but at least two Primary Examiners) reviews the summary and decides whether to reopen prosecution, allow application, or keep under appeal.– Panel has 45 days to render decision.

• Summary of Arguments may comprise arguing clear errors in Examiner’s rejections or Examiner’s omissions of essential elements needed for prima facie rejection.

• Determine whether issues are technical or legal.– If legal, ripe for appeal.– If technical, may consider resolving before appeal.

• No supplemental requests or interviews.


Claims twice rejected

• Remains under Appeal• Prosecution reopened• Application allowed• Request noncompliant

Panel of Examiners reviews Summary of

Arguments within 45 days of request

Request to participate in Pre-Appeal Brief

Conference Pilot Program, including

Summary of Arguments, filed at same time as

Notice of Appeal

Office decision Applicant actions / Office procedure

Result(s)


• Purpose: Appeal final rejection to Patent Trials and Appeal Board (PTAB)

• When can it be filed: Once claims are twice rejected or finally rejection. Must file Notice of Appeal within six months of final rejection (with extension of time after SSP).

• Procedures:– Applicant then files Appeal Brief.– Examiner issues Examiner’s Answer.– Applicant may file Reply Brief AND/OR– Pay fee ($2,000 USD large entity) for sending Appeal to

PTAB.

Appeal

• Effect: PTAB may affirm or reverse Examiner either in entirety or in-part, or remand for further consideration by Examiner.

• Cannot file Appeal with an RCE. Either one or the other.• Appeal Brief is due later of:– One month from mailing date of Decision of Pre-

Appeal Conference, OR– Two months from filing Notice of Appeal.

• Given 5 months to file Appeal Brief once Notice of Appeal is filed.

• Request and fee sending Appeal Brief to PTAB due within 2 months of Examiner’s Answer (not extendable).

Appeal

• Amendment after Notice Appeal may be admitted if to cancel claims, comply with a requirement, present claims in better condition for appeal, or amend the claims and specification upon a showing of good and sufficient reasons amendment is necessary and was not previously submitted.

• Amendment filed with or after Appeal Brief are entered at Examiner’s discretion and can only include cancellation of claims or rewriting dependent claims as independent claims.

Appeal

Applicant may request rehearing within two

months of decision to present new argument

based upon recent decisions or new grounds

of rejection or file RCE

Claims twice rejected

• Notice of Appeal within six months of final rejection

• Fee per 37 CFR §41.20• Appeal Brief within

seven months of Notice of Appeal

PTAB Decision • Affirm or Reverse

Examiner Decision (including new grounds of rejection)

• May request briefing or information

• May remand to Examiner

Reply Brief within two months of

Written Answer

Request for Oral Hearing within two months of Written Answer or Reply

Brief

Examiner Written Answer to Brief (including new grounds of rejection)

Office decision Applicant options/ Office procedure

Possible Results

Appeal

• Created to combine best aspects of AFCP 2.0 and Pre-Appeal Brief Conference Pilot Program.

• Applicant submits arguments and proposed non-broadening amendments to claims.

• Examiner schedules conference with applicant and panel of examiners.

• Panel determines whether to reopen prosecution, uphold rejection, or allow the application.

• Program expired for other Technology Centers.

Post-Prosecution Pilot Program (P3)(It should be noted that this program is only receiving requests in TC 1600: Biotechnology and Organic Chemistry)

Final Rejection

• Final rejection upheld• Application allowed• Reopen Prosecution

(new Office action to follow)Office will contact applicant

to schedule P3 conference, including a 20 minute

presentation to panel of Examiners

Request to participate including:

• Arguments • Proposed non-

broadening amendments to claims

• Statement of willingness to confer

Office decision Applicant actions / Office procedure

Result(s)

It should be noted that this program is no longer receiving requests in any Technology Centers (TCs) except for TC 1600: Biotechnology and

Organic Chemistry.

Post-Prosecution Pilot Program (P3)

• New continuing applications based on the current or parent application.

• Continuation and divisional applications have the same disclosure as parent application and share its priority date. – Do not require new declaration by inventor(s).

• All three types of applications restart the application process for the new applications.

• Abandonment of the current application does not abandon the new application.

• Current or parent application must be pending (i.e., extensions paid, if applicable) to claim priority in subsequent continuing application.

Divisional, Continuation and Continuation-in-part Applications

• Divisional application: A continuing application that is often filed on the basis where there is a restriction requirement for lack of unity of invention or species.– If previously restricted invention or species properly claimed,

will not result in obviousness type double-patenting rejection.

• Continuation application: A continuing application other than a divisional application.– Different from an RCE since the continuation

application is a new application.• Continuation-in-part (CIP): A CIP application adds

disclosure to the current application and does not share its priority with respect to the additional disclosure. – Requires new declaration by inventor(s) for new disclosure.

Divisional, Continuation and Continuation-in-part Applications

• At any time, you may take no action and allow the application to go abandoned or affirmatively abandon the application.

• The USPTO does not charge a fee for abandoning an application.

Abandonment

overview of after final practice at the uspto- justin cassell

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